Appeal No. 2001-1986
Application No. 08/719,968
art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem
addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which the inventor is
involved.”) These references relate to the same field of endeavor and they address related problems.
Thus, one of ordinary skill in the art would look to these references for their teachings. In
particular, one skilled in the art would find a teaching, suggestion, or motivation to use
hydrogenated polymeric dienes in any polymer present in a photosensitive composition for making
printing plates in order to gain the advantages of improved thermal and oxidative resistance taught
by Chen (Chen at col. 4, ll. 50–52) in addition to the high tensile strength and elasticity expected for
the printing plates taught by these references. Hoffmann teaches that hydrogenated block
(vinylaromatic-diene) copolymers are useful as substitutes for the non-hydrogenated elastic
components of printing plate precursor materials. This teaching provides one of ordinary skill in the
art with both the motivation to make the substitution as well as a reasonable expectation of success.
I disagree with my colleagues that the examiner has failed to supply sufficient evidence or
sound scientific reasoning that “the saturating or hydrogenating of the particular polymers described
[in the secondary references] is equally applicable to the polyurethane prepolymer of the type
described in . . . Scheve.” (Decision at 4.) The level of skill in this art is sufficiently high that one
of ordinary skill in the art would recognize that the deleterious effect of unsaturation in polymer
chains would be independent of the groups at the ends of the chains, especially as the chains get
-10-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007